Madaan & Co.

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TRADEMARK REGISTRATION IN INDIA -FAQ's

What is a Trademark? | How do I Register a trademark in India? | How can I apply for a trademark? | How do you get a trademark? | What is objected in trademark? | Can you register a trademark that has been abandoned? How to Register Trademark in India -Procedure and
Fees | Process of Trademark Registration in India | Trademark Prosecution in India | Indian Brand registration | Indian Trademark Registration | India Trademark protection | How to Register Trademark in India? How to File Trademark Application in India? How to Challenge Trademark Registration in India? |
Free Trademark Search in India | How can I do Trademark Search
in India free | Cost of Trademark Registration in India | Fees for Trademark Registration in India

Frequently asked Questions about Registering Trademark in India

What is a trademark?

A 'Mark` may consist of a word or invented word, signature,
device, letter, numeral, brand, heading, label, name written in a particular
style, the shape of goods other than those for which a mark is proposed to be
used, or any combination thereof or a combination of colors and so forth.
Subject to certain conditions, a trademark may also be symbolized by the name of
a person, living or dead.

For the purpose of registration, a mark chosen should be capable
of distinguishing goods or services of one person from those of the others.
Further it should not be deceptively similar to an existing mark of another
person and not the one expressly prohibited under the Act.

The marks devoid of any distinctive character, or which are only indicative of
the kind, quality, quantity, purpose, value or geographical origin of the goods,
or which are marks already in vogue in the trade due to their customary use may
not be registered. But these disqualifications do not apply to marks, which have
already acquired distinction due to their popularity and consistent use.
Internationally acclaimed brand names are freely available for use in India.

What are the types of trademarks that can be registered?

Under the Indian trademark law the following are the types of trademarks that
can be registered:

Product trademarks: are those that are affixed to identify goods.

Service trademarks: are used to identify the services of an entity, such
as the trademark for a broadcasting service, retails outlet, etc. They are
used in advertising for services.

Certification trademarks: are those that are capable of distinguishing
the goods or services in connection with which it is used in the course of
trade and which are certified by the proprietor with regard to their origin,
material, the method of manufacture, the quality or other specific features

Collective trademarks: are registered in the name of groups,
associations or other organizations for the use of members of the group in
their commercial activities to indicate their membership of the group.

Who can apply for trademark?

A person who claims to be the proprietor of the trademark
can apply for the registration of its mark for goods as well services.
A person may apply for registration of a trade mark to the Trademark office
under whose jurisdiction the principal place of the business of the applicant in
India falls.
In case, the principal place of business is outside India, then the application
can be filed in the Trademark office under whose jurisdiction the office of the
lawyer appointed by you is located.
In case of a company about to be formed, anyone may apply in his name for
subsequent assignment of the registration in the company's favor.
Before making an application for registration it is prudent to conduct a
trademark search in the Trademark office in context of the already registered
trademarks to ensure that registration may not be denied in view of resemblance
of the proposed mark to an existing one or prohibited one.

Who can use a trademark?

What are the legal requirements for registering a trademark in India?

The legal requirements to register a trade mark under the
Legislation are:

The selected mark should be capable of being represented
graphically (that is in the paper form).

It should be capable of distinguishing the goods or services
of one undertaking from those of others.

It should be used or proposed to be used mark in relation to
goods or services for the purpose of indicating or so as to indicate a
connection in the course of trade between the goods or services and some
person have the right to use the mark with or without identity of that
person.

What is covered under a trademark?

A trademark is a mark used in relation to goods or services so
as to indicate a connection in the course of trade between the goods or services
and some person having the right as proprietor to use the mark.

What international trademark conventions and treaties are applicable in India?

India has declared certain countries as convention countries,
which afford to citizens of India similar privileges as granted to its own
citizens. A person or company from a convention country, may within six months
of making an application in the home country, apply for registration of the
trademark in India. If such a trademark is accepted for registration, such
foreign national will be deemed to have registered his or her trademark in
India, from the same date on which he or she made application in the home
country.

Where the applications have been made for the registration of
trademark in two or more convention countries, the period of six months would be
reckoned from the date on which the earlier or earliest of those applications
was made.

Although the recovery of damages for infringement of a trademark
is possible only if the infringement takes place after the date of filing
application for registration with the concerned trademark office in India, yet
the deemed seniority in making application in home country may entitle the
applicant to initiate an action in India for injunction, delivery of impugned
labels and so on.

What are the benefits of registering a trademark?

The registration of a trade mark confers upon the owner the
exclusive right to the use of the registered trade mark and indicate so by using
the symbol (R) in relation to the goods or services in respect of which the mark
is registered and seek the relief of infringement in appropriate courts in the
country. The exclusive right is however subject to any conditions entered on the
register such as limitation of area of use etc. Also, where two or more persons
have registered identical or nearly similar mark due to special circumstances
such exclusive right does not operate against each other.

What are the remedies for infringement of a trademark and passing-off?

Two types of remedies are available to the owner of a trademark
for unauthorized use of his or her mark or its imitation by a third party. These
remedies are:

an action for infringement' in case of a registered
trademark; and

an action for passing off' in the case of an unregistered
trademark

While former is a statutory remedy, the latter is a common law remedy. In an
action involving infringement or passing off, a court may grant relief of
injunction and/or monetary compensation for damages for loss of business and/or
confiscation/destruction of infringing labels and tags etc.
Although registration of trademark is prima facie an evidence of validity of a
trademark, yet the registration can not upstage a prior consistent user of
trademark, for the rule is 'priority in adoption prevails over priority in
registration`.

How to apply for registration of a trademark in respect of particular Goods or Services?

Goods and services are classified according to the International
Classification of goods and services. Currently schedule IV of the Legislation
provides a summary of list of such goods and services falling in different
classes which is merely indicative. The Registrar is the final authority in the
determination of the class in which particular goods or services fall. The
Schedule IV of the Legislation is annexed at the end of this questionnaire on
trade marks.

Who benefits from trademark registration?

The Registered Proprietor: The Registered Proprietor of a trade mark can stop
other traders from unlawfully using his trade mark, sue for damages and secure
destruction of infringing goods and or labels.
The Purchaser and ultimately Consumers of trademarks goods and services.
The Government: The Trademarks Registry is expected to earn a substantial annual
revenue, which is perpetually on the rise.

What does the register of trademark contain?

The register of trademark currently maintained in electronic
form contains inter alia the trade mark the class and goods/ services in respect
of which it is registered including particulars affecting the scope of
registration of rights conferred or disclaimers, if any; the address of the
proprietors; particulars of trade or other description of the proprietor; the
convention application date (if applicable); where a trade mark has been
registered with the consent of proprietor of an earlier mark or earlier rights,
that fact.

Can any corrections be made in the application, or the register of trademarks?

Can a registered trademark be removed from the register?

It can be removed on application to the Registrar on prescribed form on the
ground that the mark is wrongly remaining on the register. The Registrar also
can suo moto issue Notice for removal of a registered trade mark. Non use of a
registered trademark for continuous period of 5 years is also a ground of
removal.

Can I apply for a trademark in black & white, as well as in color?

What recourse do I have if a competitor has already registered my mark in India?

The Indian trademark law provides for invalidation proceedings and you have the
right to initiate a cancellation action should a competitor have registered your
trademark in India. You also have the right to initiate either a civil or a
criminal action against any party that is violating your mark in India.

When can the ™ symbol be used in India?

What are the penalties for infringement of trademark in India?

The penalty for selling or providing services using a false trademark is a
minimum of six months and maximum of three years and with fine not less than
Rupees fifty thousand but which may extend to Rupees two lakh.

How can a foreigner register a trademark in India?

In addition to the registering of their trademarks in India, businesses need
to adopt other strategies for protecting their trademarks. Some of them are
mentioned below:

Get trademark searches conducted in the Indian Trade Marks Registry in
the classes that are of interest to you including the ancillary classes.

Get common law searches (this includes the internet, market surveys,
yellow pages and directories) conducted to ascertain whether third parties
are using your trademarks and if so, the extent of such use.

Based on this information and after seeking the local counsel's opinion
decide if the trademark is available for use or not.

Should the trademark be available for use, immediately apply for the
registration.

The rights holder should also consider hiring a watching service to
monitor the trademark journals in order to alert them to any published,
deceptively similar trademarks or descriptive trademarks that might be of
concern.

Should the rights holder own a trademark that has been used and has
acquired goodwill and reputation, it is advisable that along with filing of
the trademark application in India, they should also make press releases,
publish cautionary notices and advertise the mark to ensure that the
relevant section of the public is aware that they are entering the Indian
market and are protecting their trademark from any kind of third party
violation.

The rights holder should also take immediate steps to register their
domain names including country coded top level domain names in India, as
there have been many instances of third parties registering domains for
certain well known marks with the intention of extracting money by selling
these domain names to the rights holders.

Should the rights holder discover that their trademark is being
infringed, they should take immediate steps to protect their trademark,
either by the means of filing oppositions, cancellations, conducting
investigations, sending cease and desist notices or initiating appropriate
civil and criminal actions.

Can a foreign company file a single application for more than one goods or services in India?

Yes. India recognizes the system of multi-class applications and follows the
International Classification. There are 42 classes in which the goods and
services have been divided in India and you can file for multi-class
applications both for goods and services.

Can a foreign company sell its products or services in India before registering trademark in India?

No, Indian trademark law allows filing of a trademark application in India on
an 'intent-to-use' basis. However the registered proprietor of the trademark in
India has to commence use of the mark within 5 years and 3 months of the date of
registration. Otherwise the registered trademark is open to invalidation
proceedings.

What is the procedure for trademark filing and other formalities?

For filing new applications there are prescribed forms depending on the
nature of application such as Form TM-1, TM-2, TM-3, TM-8, TM-51 etc.
To file a Notice of Opposition to oppose an application published in the Trade
Marks Journal (FormTM-5).
For Renewal of a Regd. trademark (Form TM-12 ).
Surcharge for belated renewal (Form -10)
Restoration of removed mark (Form TM-13)
Application for rectification of a registered trade mark (Form TM-26)
Legal Certificate (Form TM-46)
(Providing details of entries in the Register)
Official search request (Form TM-54).
Preliminary advise of the Registrar as to the registrability of a mark (Form
TM-55).
Copyright search request and issuance of certificate (Form TM-60)

What is the new trademark law in India?

The Indian law of trademarks is enshrined the new Trade Marks
Act, 1999 came into force with effect from September 15, 2003. The old Trade and
Merchandise Marks Act, 1958 was repealed at the same time. The new Trademarks
Act of 1999 is in line with the WTO recommendations and is in conformity with
the TRIPS Agreement to which India is a signatory.

Foreign Investors Establishing Business in India

Foreign investors, including USA businesses, planning to incorporate in India are required to
seek governmental approval before incorporating in India or opening a
branch office or establishing subsidiary in India.

Some approvals
for foreign businesses are automatic - RBI
Approvals - if they are below the regular percentage allowed for
various Sectors. See our FDI in India Sector wise Guide for more information.
Application for Permission is required for those approvals.

Special Permission -
FIPB Approvals - could be obtained to invest over and above the
regular percentage allowed for various
Sectors.

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